Appeal No. 2002-1600
Application 09/350,858
Rejections under 35 U.S.C. § 102(b)
We need to address only claim 18, which is the sole
independent claim.
For the appellants’ claimed invention to be anticipated, the
reference must lead one of ordinary skill in the art to a product
which falls within the scope of the claim “without any need for
picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”
In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
The examiner broadly discusses Nagle’s method steps (answer,
page 3). The examiner, however, does not explain how a product
having the characteristics required by the appellants’ claim 18
can be obtained from Nagle’s disclosure without picking,
choosing, and combining various disclosures not directly related
to each other by the teachings of that reference. The examiner,
therefore, has not carried the burden of establishing a prima
facie case of anticipation of the appellants’ claimed invention
over Nagle.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007